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Telstra Corporation Ltd v. David Whittle [2001] GENDND 928 (11 May 2001)

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Complainant is Telstra Corporation Ltd of Level 4, 400 George Street, Sydney, NSW, 2000, Australia.

The Respondent is David Whittle of 27 Howitt Street, South Yarra, Melbourne, Victoria 3141, Australia.

The domain name on which the Complaint is based is <telsra.com>.

The registrar with which the domain name is registered is Melbourne IT Ltd of Level 2, 120 King Street, Melbourne, Victoria 3000, Australia.

3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("the Policy") in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") on March 26, 2001.

3.3 The Center has stated in its "Formal Requirements Compliance Checklist" dated April 2, 2001 that:

- The Complaint was filed in accordance with the requirement of the Rules and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as at December 1, 1999 ("the Supplemental Rules").

- Payment for filing was properly made.

- The Complainant has complied with the formal requirements.

3.4 The Panel accepts these findings and it finds further that:

- The Complaint was properly notified in accordance with the Rules, paragraph 2(a), having been sent to the Respondent by Post/Courier and E-mail on April 2, 2001.

- Having received no response from the Respondent within the specified time in the Notification of Complaint, the Center issued a Notification of Respondent Default on April 23, 2001.

- On May 1, 2001, the Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. The notification informed the parties that the Administrative Panel would be composed of a single member and that, in the absence of exceptional circumstances, the decision of the Panel was to be forwarded to the Center by May 14, 2001.

- The Administrative Panel was properly constituted.

4.1 According to the Complaint (pages 5-6), the Complainant is Australia’s leading telecommunications and information services company, offering a wide range of telecommunications and information services. It is the successor in title to the telecommunications business operated from 1901 to 1975 by the Commonwealth Postmaster-General and from 1975 under the name "Telecom Australia" and the Overseas Telecommunications Corporation ("OTC"). It was formed as a result of the merger of these two entities in 1992, and adopted "Telstra Corporation Limited" as its legal name in April 1993, although still trading domestically under the name of Telecom Australia. In July 1995, the domestic trading name Telecom Australia was changed to "Telstra" and has been used ever since.

4.2 In 1997, Telstra Corporation was partially privatized by a public offering of shares, and a further public offering on the Australian Stock Exchange occurred in 1999. It is now one of the two largest publicly listed companies in Australia and was ranked 70^th in the Financial Times Limited 2000 and 108^th in Business Week’s 2000 Global 1000 of the world’s most valuable companies by market value (Complaint, para 29). It is currently 50.1% owned by the Commonwealth Government of Australia, and 49.9% owned by shareholders of whom there are approximately 2.14 million (the latter has a market capitalisation of about AUD$60 billion). The Complainant’s revenue in the financial year 1999-2000 exceeded $A19 billion. It is also one of Australia’s largest employers, with 50,761 full-time employees as at 30 June 2000 (for further details, see the latest annual report which is available online via the URL provided in Annexure D).

4.3 The main activities of the Complainant are carried out under or by reference to the "TELSTRA"® mark, and include the provision of telephone exchange lines and call services to over 8 million residential and business customers throughout Australia, the provision and maintenance of approximately 36,000 public payphones, the operation of a digital mobile telecommunications service with over 4.1 million customers, the provision of a large range of data, Internet and on-line services, the provision of directory information and connection services, and the operation of over 100 retail outlets around Australia.

4.4 According to the Complaint (page 7), the Complainant has registered, or has filed applications with registrations pending for, 68 trade marks comprising or containing the word "TELSTRA" in Australia. The trade marks cover an extensive range of goods and services and span 17 of the 42 trade mark classes (a list of these, comprising a printout from the website of IPAustralia, the registering authority, is set out in Annexure E). In addition, the Complainant has registered, or has filed applications with registrations pending for a large number of "TELSTRA" trade marks overseas in some 29 countries. It has also registered over 50 domain names containing the word "Telstra" including <telstra.com>, <telstra.net>, <telstra.org> and <telstra.com.au>. At para 31 of the Complaint, it is noted that the Complainant’s websites received between 11 million and 22 million hits per month throughout the year 2000 and that in September 2000 the <telstra.com> website was the fourth most frequently visited website in Australia.

4.5 According to the Complaint (pages 7–9), the Complainant has been very active in promoting the "Telstra" brand through a wide variety of sponsorship and advertising activities, both within Australia and internationally. Within Australia, there is extremely high market recognition of the "TELSTRA" brand (see Annexure F), while the amounts spent annually on advertising and promotion over the past 5 years range between $164.1 and $209.1 million. Sponsorship activities have included sponsorship of such high profile events as the 2000 Sydney Olympic Games and the Sydney to Hobart Yacht Race, and various Australian sporting teams, such as the Australian Womens’ Hockey Team (the "Telstra Hockeroos") and the Australian Olympic Teams.

4.6 According to the WHOIS database maintained by Internet Names Worldwide of Melbourne, Victoria, Australia (a Division of Melbourne IT Ltd), the Respondent is listed as the Registrant of the domain name <telsra.com>, having been registered on

March 21, 2000, and is also listed as the administrative and technical contact (Complaint, Annexure A).

4.7 The Complaint alleges that the Complainant became aware of the domain name in February 2001, and it was observed that the name resolved to a number of gambling sites (Complaint, Annexure K). Following correspondence between the parties, the Complaint in the present proceeding was made

The Complainant seeks cancellation of the domain name <telsra.com>, and in support of this contention addresses each of the elements described in paragraph 4(a) of the Policy as follows.

- With respect to the element described in paragraph 4(a)(i), the Complainant submits that the disputed domain name is confusingly similar to its TELSTRA trade mark and that in a number of previous cases under the Policy such small differences in spelling have been held to satisfy this element of the Policy. In particular, it cites the following Panel decisions: Encyclopaedia Britannica, Inc. v. John Zuccarini Case No D2000-0330|/Arbitration/arbiter/domains/decisions/html/2000/d2000-0330.html"> Case No D2000-0330 (concerning <encyclopediabrittanica.com>, <brtanica.com>, <bitannica.com>, and <britannca.com>), Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party Case No D2000-1415|/Arbitration/arbiter/domains/decisions/html/2000/d2000-0415.html"> Case No D2000-1415 (concerning <nicholekidman.com> and <nicolekidmannude.com>), Hewlett-Packard Co. v. Cupcake City File No FA000200093562 (concerning <hewlittpackard.com>).

- With respect to the element described in paragraph 4(a)(ii), the Complainant submits that there is no evidence of any right or legitimate interest by the Respondent in the domain name. It states that it has not licensed, authorized or otherwise permitted the Respondent to use its name or any of its trade marks or similar name or mark, and that it has not licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating any of those marks (Complaint, para 42). It submits further that it has undertaken searches (including telephone book and Australian Securities & Investments Commission name searches) and has found no evidence that the Respondent has ever traded under the name "telsra" (Complaint, para 42 and Annexure O).

- With respect to the element described in paragraph 4(a)(iii) of the Policy, the Complainant submits that the mark "TELSTRA" is a well known trade mark in Australia and that there "can be no question that the Respondent is well aware of the reputation of Telstra in its name" in the light of the following: the distinctive nature of the name; the high promotion of TELSTRA, particularly during the Sydney Olympic Games in September 2000; and the fact that the Respondent is located in Melbourne, Australia. The Complainant notes further that, until the Respondent received a letter of demand from the Complainant’s solicitors, the domain name redirected users to a gambling site which pays a commission to persons who direct Internet traffic to it (Complaint, Annexures L and N). The Complainant submits that the Respondent knew, or should have known, of the large number of visits received daily at the Complainant’s <telstra.com> website and that the misspelled domain name was likely to result in the diversion of large numbers of people to the Respondent’s site and then to the redirected gambling site. Furthermore, once this rediversion was discovered by the Complainant and made the subject of a letter of demand, the Respondent offered to sell the domain name to the Complainant (Annexure H). It is submitted that these facts are evidence of registration and use of the domain name in bad faith. The Complainant submits further that the domain name is still in use, or alternatively that, if there is no positive action in bad faith, there is inactivity that amounts to use in bad faith within the interpretation adopted in Telstra Corporation v Nuclear Marshmallows Case No D2000-0003|/Arbitration/arbiter/domains/decisions/html/2000/d2000-0003.html">Case No D2000-0003.

As noted above, the Respondent has not filed a Response to the Complaint. Under paragraph 5(e) of the Rules, it is provided that if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint. As no exceptional circumstances have been brought to the Panel’s attention, it proceeds to make the findings below on the basis of the material contained in the Complaint.

In accordance with paragraph 4(a) of the Policy, the Complainant has the burden of demonstrating three elements.

As noted in paragraph 4.3 above, the Complainant has provided evidence of its trade mark registrations within Australia (Complaint, Annexure E) and states that it has registrations or applications filed in another 29 countries. In addition, it has registered over 50 domain names that contain the word "Telstra", and has spent large sums each year in the promotion and advertising of services and products under that name. Particular reference should be made here to evidence which the Complainant has annexed concerning the level of consumer recognition of the "Telstra" name within the Australian market. According to monthly telephone surveys undertaken by outside consultants, the "Telstra" brand has a very strong market presence with total unaided unawareness (on the part of consumers) at around 95% (Complaint, Annexure F). The date of this research is not precisely indicated, but it appears to have been carried out during 1997 and 1998, and, along with the other evidence presented by the Complainant, can be taken as demonstrating that the "Telstra" name and mark is well known within the Australian community. Accordingly, the Complainant has established that the first part of paragraph 4(a)(i) of the Policy, namely that it has rights in a trade or service mark.

The next question is whether the disputed domain name is confusingly similar to the Complainant’s mark. In this regard, there is a small difference in the spelling or misspelling of the domain name, with the absence of the letter "t", and the addition of the appendage ".com" in the domain name. In determining whether a domain name is confusingly similar to a mark in which the Complainant has rights, it is a matter of comparing one with the other: evidence of actual confusion or evidence of the use of the mark or its fame is irrelevant to this comparison. See further the cases cited by the Complainant at para 38 of the Compliant: Gateway Inc v Pixelera.com Inc Case No D2000-0109|/Arbitration/arbiter/domains/decisions/html/2000/d2000-0109.html">Case No D2000-0109; Allocation Network GmbH v Steve Gregory Case No D2000-0016|/Arbitration/arbiter/domains/decisions/html/2000/d2000-0016.html">Case No D2000-0016.

In the present case, the misspelling by the Respondent of "Tesltra" relates to one letter only and the sound and appearance of "Telstra" and <telsra.com> remain very close. There are a number of earlier decisions in which Panels have found confusing similarity where there have been similar small differences between domain names and trade or service marks and the addition of the suffix .com has been found to make no difference to the creation of such confusing similarity: World Wrestling Federation Entertainment Inc v Michael Bosman WIPO Case No D99-0001|/Arbitration/arbiter/domains/decisions/html/1999/d1999-0001.html">WIPO Case No D99-0001 (January 14, 2000) (worldwrestlingfederation.com and WORLD WRESTLING FEDERATION) and InfoSpace.com, Inc v Registrar Administrator Lew Blanck, WIPO Case No D2000-0069|/Arbitration/arbiter/domains/decisions/html/2000/d2000-0069.html">, WIPO Case No D2000-0069 (April 3, 2000) (INFOSPACES.COM and INFOSPACE). In this regard, the Complainant also cites the following illustrative decisions: Encyclopaedia Britannica, Inc. v. John Zuccarini Case No D2000-0330|/Arbitration/arbiter/domains/decisions/html/2000/d2000-0330.html"> Case No D2000-0330 (concerning encyclopediabrittanica.com, brtanica.com,bitannica.com, and britannca.com), Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party Case No D2000-1415|/Arbitration/arbiter/domains/decisions/html/2000/d2000-1415.html"> Case No D2000-1415 (concerning nicholekidman.com and nicolekidmannude.com), Hewlett-Packard Co. v. Cupcake City File No FA000200093562 (concerning hewlittpackard.com). Each case, of course, is dependent upon its own facts, but in the present proceeding the Panel has no difficulty in concluding that the disputed domain name <telsra.com> is confusingly similar to the Telstra mark, and that the requirements of paragraph 4(a)(i) have been satisfied.

Paragraph 4(c) of the Policy sets out certain matters to which a Respondent can point as demonstrating rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii). These include:

"(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

In the present proceeding, there is no evidence that the Respondent has used the domain name <telsra.com> in connection with any bona fide offering of goods and services (subpara (i)). Nor is there any evidence of "demonstrable preparations" to use the domain name in that way (subpara (i)), while it is clear that there has been no licence or authorization given by the Complainant to the Respondent to use the name or mark "Telstra". Indeed, the evidence adduced by the Complainant is that until February 2001, the URL www.telsra.com automatically redirected Internet users to another website concerned with gambling (Complaint, Annexure K) and that this, in turn, directed users to other gambling sites (Complaint, para 33). Thus, the effect of use of the disputed domain name was to increase Internet traffic to another website and there was no independent offering of goods or services by the Respondent under the disputed domain name.

Likewise, there is no evidence before the Panel that indicates that the Respondent has ever carried on a business under the name "Telsra" or any variant of this expression, or that it has been commonly known by that name (subparagraph (ii)).

Finally, there is no evidence before the Panel that indicates whether any of the factors referred to in subparagraph (iii) are applicable.

The matters referred to in paragraph 4(c) are not an exhaustive statement of what may constitute rights or legitimate interests in a domain name, and it is therefore open to a Respondent to point to other evidence that may show this. In the present proceeding, there has been no Response or evidence presented by the Respondent, and the Panel, under Paragraph 14(b) of the Rules, is entitled to draw from such default such inferences as it considers appropriate. The Panel therefore concludes that the Complainant has established this element of Paragraph 4(a) of the Policy, namely that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This is not an exclusive list, and includes:

"(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration (and acquisition) of the name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of an Administrative Panel to the effect that registration in bad faith followed by a passive holding of a domain name when there is no way in which it could be used legitimately can amount to use in bad faith: Telstra Corporation Ltd v Nuclear Marshmallows WIPO Case No D2000-0003|/Arbitration/arbiter/domains/decisions/html/2000/d2000-0003.html"> WIPO Case No D2000-0003. In addition, it would be both mistaken and artificial to confine paragraphs (i)-(iii) solely to the time of registration: presumably, it would also be a use of a disputed domain name in bad faith to do so, after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several Panel decisions: see, for example, Estee Lauder Inc v estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No D2000-0869|/Arbitration/arbiter/domains/decisions/html/2000/d2000-0869.html">, WIPO Case No D2000-0869 and E & J Gallo Winery v Hanna Law Firm,|/Arbitration/arbiter/domains/decisions/html/2000/d2000-0615.html">, WIPO Case No D2000-0615.

In the light of the above, the Complainant contends that the circumstances set out in subparagraphs (i) and (iv) are present.

In this regard, the Complainant states that after its solicitors had sent a letter of demand to the Respondent on February 13, 2001 (Complaint, Annexure G), it had received a response from the Respondent in a letter dated February 19, 2001 (Annexure H). In this letter, the Respondent stated that he had "as at that date" removed all DNS entries for the domain name but had "absolutely no intention of cancelling the registration." The letter concluded with the following statement: "Should your client wish to purchase the domain name, I may be open to discussions concerning this". There is no further evidence adduced concerning the question of purchase of the domain name.

Does the Respondent’s letter of February 13, 2001, including the statement last quoted above, indicate that the Respondent has "registered or … acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark …for valuable consideration in excess of …documented out-of-pocket costs directly related to the domain name" (within the formulation in paragraph 4(c)(i))? There is no reference to price in the letter, but the inference that the Respondent’s intention was to sell the domain name can be drawn from the following:

- The Respondent’s readiness to remove all DNS entries for the domain name once it received the Complainant’s letter of demand.

- The absence of any indication in the letter of the purpose for which the Respondent had registered the domain, ie whether this was for the purpose of carrying on a particular business by reference to that name.

- The refusal to cancel the registration, coupled with an "invitation to treat".

- The reference to "purchase" rather than "transfer" of the domain name, thereby indicating that that the Respondent was concerned to receive a consideration for this in excess of its out of pocket expenses. While no mention is made of an actual monetary amount, it is clear that the Respondent was foreshadowing a bargaining process in which a price would be settled between the parties and that this would include a profit component in addition to any out of pocket expenses.

In the light of the above, the Panel concludes that the Complainant has established the bad faith of the Respondent in registering and using the domain name within the terms of paragraph 4(b)(i).

Evidence presented by the Complainant indicates that, until at least February 19, 2001, Internet users who accessed the URL www.telsra.com were automatically redirected to a gambling website (Annexure K). It appears that this website attracts customers by paying a commission to parties, such as the Respondent, who direct Internet traffic to it (Annexure L, extract from "Casino Traffic" website). This traffic can be generated by banner advertising or "whatever legal means necessary", including via blind links (Annexure M, "Casino Traffic Frequently Asked Questions"). Given the very high consumer recognition of the "Telstra" brand, plus the existence of a number of domain names incorporating the "Telstra" name, including <telstra.com>, it is clear that there is a high probability that Internet users wishing to locate the Complainant will find the Respondent’s website <telsra.com> and will then be diverted to the gambling site. This comes within the formulation in paragraph 4(b)(iv), with the elements of "commercial gain" and "likelihood of confusion …as to the source, sponsorship, affiliation, or endorsement" of the Respondent’s web site being clearly present. Similar findings involving diversion of Internet users to other sites through the use of domain names that represent misspellings of another party’s trade mark are to be found in Encylopaedia Britannica, Inc v John Zuccarini Case No D2000-0330|/Arbitration/arbiter/domains/decisions/html/2000/d2000-0330.html">Case No D2000-0330 and Nicole Kidman v John Zuccarini Case No D2000-1415|/Arbitration/arbiter/domains/decisions/html/2000/d2000-1415.html">Case No D2000-1415.

As noted above, the instances of bad faith referred to in paragraph 4(b) are not exhaustive, and it is open to a Complainant to adduce evidence of other matters supporting the inferences of registration and use in bad faith.

In this regard, the Complainant has submitted that the redirection of Internet users to a gambling site through the use of a confusingly domain name is embarrassing to the Complainant and has the effect of tarnishing its reputation and marks. The Complainant asserts (Complaint, para 52) that gambling is a controversial issue in Australia where the Government has banned certain online gambling sites. This controversy is within the personal knowledge of the Panel, but cannot be taken into account for present purposes in the absence of further evidence from the Complainant, eg newspaper articles, Hansard references and so on. Nonetheless, the Panel is prepared to conclude that the images contained on the website ("Gambling Girls") to which Internet users are directed when they access <telsra.com> are inappropriate images for users who are intending to access a telecommunications site, and that this must inevitably tarnish the general reputation of the Complainant. The Panel therefore concludes that the use of these images and associations is further evidence from which the inference of registration and use of the domain name in bad faith can be drawn.

Evidence of continued use of the domain name in bad faith is also to be seen from the message which now appears on the Respondent’s webpage, namely the message that "Forbidden. You don’t have permission to access on this server." (Annexure J). At the very least, this will be frustrating for Internet users who will believe that they have been denied access to the legitimate <telstra.com> website.

Finally, the Complainant submits that, even if the Respondent’s current conduct (as outlined in the preceding paragraph) is not to be regarded as a positive action constituting use in bad faith, inaction is nonetheless to be regarded as within this concept, referring here to the early Panel decision in Telstra Corporation Limited v Nuclear Marshmallows Case No D2000-0003|/Arbitration/arbiter/domains/decisions/html/2000/d2000-0003.html"> Case No D2000-0003 and the subsequent Panel decisions that have followed this (Complaint, para 54). In light of the findings already made, it is unnecessary for the present Panel to base its decision in the case on this specific ground.

The Panel finds that the Complainant has established its case with respect to each of the elements stated in paragraph 4(a) of the Policy.

The Administrative Panel accordingly directs that the registration of the domain name <telsra.com> should be cancelled.

Staniforth Ricketson
Sole Panelist

Dated: May 11, 2001